FEDERAL COURT OF AUSTRALIA KerryJ Investment Pty Ltd v Xiamen Fengwei Energy Technology Co Ltd [2013] FCA 141 Citation: KerryJ Investment Pty Ltd v Xiamen Fengwei Energy Technology Co Ltd [2013] FCA 141 Parties: KERRYJ INVESTMENT PTY LTD (ACN 108 633 227) v XIAMEN FENGWEI ENERGY TECHNOLOGY CO LTD and CHIKO SOLAR INDUSTRY CO LTD File number: VID 1186 of 2011 Judge: KENNY J Date of judgment: 1 March 2013 Catchwords: PRACTICE AND PROCEDURE — service outside Australia — deemed service — where unrepresented corporate party provides email address as address for service — whether Hague Convention service reasonably practicable — whether documents brought to the attention of party — Federal Court Rules 2011 (Cth) r 10.48. Legislation: Federal Court Rules 2011 (Cth) Date of hearing: 1 March 2013 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 14 Counsel for the Applicant/Cross-Respondent: P Wallis Solicitor for the Applicant/Cross-Respondent: Actuate Legal Counsel for the First Respondent/First Cross-Claimant The First Respondent/First Cross-Claimant did not appear. Counsel for the Second Respondent/Second Cross-Claimant: The Second Respondent/Second Cross-Claimant did not appear. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 1186 of 2011 BETWEEN: KERRYJ INVESTMENT PTY LTD (ACN 108 633 227) Applicant/Cross-Respondent AND: XIAMEN FENGWEI ENERGY TECHNOLOGY CO LTD First Respondent/First Cross-Claimant CHIKO SOLAR INDUSTRY CO LTD Second Respondent/Second Cross-Claimant JUDGE: KENNY J DATE OF ORDER: 1 MARCH 2013 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: 1. Pursuant to Rule 10.48 of the Federal Court Rules 2011 (Cth) ("the Rules"), the interlocutory application dated 20 November 2012 ("the First Interlocutory Application") and the affidavit of Joel Brady Masterson dated 20 November 2012 ("the First Masterson Affidavit") be taken to have been served on the First Respondent on 20 November 2012, by the Applicant having sent emails to the First Respondent on that date annexing a copy of the First Interlocutory Application and the First Masterson Affidavit at the email addresses info@gracesolar.com and sales021@gracesolar.com. 2. Pursuant to Rule 10.48 of the Rules, the interlocutory application dated 14 February 2013 ("the Second Interlocutory Application"), the amended version of the First Interlocutory Application dated 14 February 2013 ("the Amended Interlocutory Application") and the affidavit of Joel Brady Masterson dated 14 February 2013 ("the Second Masterson Affidavit") be taken to have been served on the First Respondent on 14 February 2013, by the Applicant having: (a) sent emails to the First Respondent on 14 February 2013 annexing copies of the Second Interlocutory Application, the Amended Interlocutory Application and the Second Masterson Affidavit at the email addresses info@gracesolar.com, sales021@gracesolar.com and sales@gracesolar.com; and (b) sent the Second Interlocutory Application, the Amended Interlocutory Application and the Second Masterson Affidavit by registered international post addressed to the First Respondent at 1st Floor Building E, No 195 Gaoqi Village, Dianqian St, Huli District, Xiamen, Fujian, China. 3. The Applicant file and serve any further affidavits and any written submissions in support of the Amended Interlocutory Application by 5 April 2013. 4. The First Respondent file and serve any affidavits and written submissions in answer by 12 April 2013. 5. The Applicant's Amended Interlocutory Application dated 14 February 2013 be fixed for hearing on 19 April 2013 at 11.00 am. 6. Costs be reserved. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 1186 of 2011 BETWEEN: KERRYJ INVESTMENT PTY LTD (ACN 108 633 227) Applicant/Cross-Respondent AND: XIAMEN FENGWEI ENERGY TECHNOLOGY CO LTD First Respondent/First Cross-Claimant CHIKO SOLAR INDUSTRY CO LTD Second Respondent/Second Cross-Claimant JUDGE: KENNY J DATE: 1 MARCH 2013 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 Rule 10.48 of the Federal Court Rules 2011 ("the Rules") provides as follows: 10.48 Deemed service A party may apply to the Court without notice for an order that a document is taken to have been served on a person on the date mentioned in the order if: (a) it is not practicable to serve the document on the person in a foreign country in accordance with a convention, the Hague Convention or the law of a foreign country; and (b) the party provides evidence that the document has been brought to the attention of the person to be served. Note Without notice is defined in the Dictionary. 2 By an interlocutory application filed on 14 February 2013, the applicant seeks orders that: 1. Pursuant to Rule 10.48 of the [Rules], the interlocutory application dated 20 November 2012 (First Interlocutory Application) and the affidavit of Joel Brady Masterson dated 20 November 2012 (First Masterson Affidavit) be taken to have been served on the First Respondent on 20 November 2012, by the Applicant having sent emails to the First Respondent on that date annexing a copy of the First Interlocutory Application and the First Masterson Affidavit at the email addresses info@gracesolar.com and sales021@gracesolar.com. 2. Pursuant to Rule 10.48 of the [Rules], this interlocutory application (Second Interlocutory Application), the amended version of the First Interlocutory Application dated 14 February 2013 (Amended Interlocutory Application) and the affidavit of Joel Brady Masterson dated 14 February 2013 (Second Masterson Affidavit) be taken to have been served on the First Respondent on 14 February 2013, by the Applicant having: (a) sent emails to the First Respondent on 14 February 2013 annexing copies of the Second Interlocutory Application, the Amended Interlocutory Application and the Second Masterson Affidavit at the email addresses info@gracesolar.com, and sales021@gracesolar.com and sales@gracesolar.com; and (b) sent the Second Interlocutory Application, the Amended Interlocutory Application and the Second Masterson Affidavit by registered international post addressed to the First Respondent at 1st Floor Building E, No 195 Gaoqi Village, Dianqian St, Huli District, Xiamen, Fujian, China. 3. Costs be reserved. 3 In support of this application, referred to above as the Second Interlocutory Application, the applicant relied on an affidavit of the applicant's solicitor, Joel Brady Masterson, filed on 14 February 2013, as well as an earlier affidavit of Mr Masterson, filed on 20 November 2012, and the affidavit of Colin Lee Shin Cheung of 29 November 2011. The applicant also filed supporting written submissions dated 27 February 2013, which helpfully refer to and discuss relevant authorities. At the hearing this morning, the applicant filed a further affidavit sworn by Mr Masterson today. 4 By the First Interlocutory Application, the applicant sought various orders against the first and second respondents. In relation to the first respondent, the applicant sought orders that the first respondent appoint a lawyer and file a notice of acting in accordance with Rule 4.04 and a notice of address for service in accordance with Rules 11.01, 11.02 and 11.07 of the Rules. The applicant sought a further order that, in the event that the first respondent failed to comply with this order, then judgment be entered for the applicant against the first respondent pursuant to Rule 5.23(2) of the Rules. In the Amended Interlocutory Application, filed on 14 February 2013, the applicant essentially seeks the same orders against the first respondent (but with an amended deadline) and no longer seeks orders against the second respondent. 5 The First Interlocutory Application was supported by Mr Masterson's affidavit of 20 November 2012. In this affidavit, Mr Masterson deposed to various matters, including that, on 6 September 2012, he received an email from a Ms Janet Wu, Assistant Manager of the Sales Department of the First Respondent, advising that the First Respondent had terminated the retainer of solicitors in Australia to represent it in this proceeding and giving as an address for service the email address "info@gracesolar.com". Mr Masterson further deposed to various items of correspondence sent, for the attention of Ms Wu, to that email address and to the email address "sales021@gracesolar.com", from which Ms Wu's email was sent. 6 Mr Masterson's 14 February 2013 affidavit sets out the circumstances in which the applicant seeks orders under Rule 10.48 of the Rules. These circumstances include: (1) Leave to serve its Amended Originating Application and Amended Statement of Claim outside Australia in accordance with Division 10.6 of the Rules was given to the applicant on 29 November 2011. (2) The applicant filed an Application for Request for Service Abroad, with the documents required by Rule 10.64(1), on 20 December 2011. (3) The applicant's solicitors received notification from the Court that the Request had been sent to the "Central Authority in China" on 22 December 2011. (4) The applicant asked officers of the Court whether a certificate of service had been received by the Court, as required, on numerous occasions between 6 February 2012 and 27 November 2012 and was informed that it had not been received. (5) On 27 November 2012, a Registrar of the Court advised the applicant's solicitor that certificates of services had been received by the Court in or about June 2012. (6) One certificate of service, dated 11 June 2012, indicates that relevant documents were served on "the legal representatives of the company" at Zone B, 2nd Floor, Buliding E, No 195 Gaidian Community, Gaodian Village, Dianqian Street, Huli District, Xiamen, Fujian in China. 7 Mr Masterson deposes that, having regard to the circumstances set out above, he believes that it would take between 6 to 12 months for the applicant to receive confirmation that it has successfully served any of the documents referred to in the orders it now seeks on the first respondent by following the Hague Convention procedure. Mr Masterson further deposes that: In this proceeding, [the applicant] alleges that the [first respondent] has been supplying products in Australia that infringe an innovation patent granted in the name of [the applicant]. I am informed by Mr Mario Guzzi, a Regional Manager of [the applicant], and believe that [the first respondent's] alleged patent infringements have deprived [the applicant] of several million dollars in revenue, key customer accounts and a significant percentage of the overall market share it enjoyed in Australia before those alleged infringements began taking place in about 2010, and which has not been recovered. I am informed by Mr Guzzi and believe that [the applicant] has not received any assurances from [the first respondent] that it has ceased, or will cease, its allegedly infringing conduct. … I therefore believe that [the applicant] is likely to suffer significant prejudice if it is required to wait an additional 6 to 12 months to effect service on [the first respondent] before obtaining judgment against [the first respondent]. 8 Before an order can be made under Rule 10.48, the Court must be satisfied that it is not practicable to serve the document or documents on the first respondent in China in accordance with the Hague Convention (which is otherwise applicable in this case). Whether or not service in accordance with the Hague Convention is practicable depends on the circumstances of the case. The fact that Rule 10.48(b) requires the applicant to provide evidence that the documents have in fact been brought to the attention of the person to be served necessarily affects the Court's evaluation of what is, in the circumstances, practicable. The circumstances disclosed in Mr Masterson's 14 February 2013 affidavit indicate that it is likely to take at least 6 months to receive confirmation of service on the first respondent. Considering the already lengthy history to date of this proceeding, the nature of the proceeding and the prejudice to the applicant if, though ultimately successful, the adjudication of its claim is unduly prolonged, I am satisfied that, as Rule 10.48(a) requires, it is not practicable to serve the documents referred to at [2] above in accordance with the Hague Convention. 9 The affidavits of Mr Masterson provide sufficient evidence that the documents in question have already been brought to the attention of the first respondent. Mr Masterson's 14 February 2013 affidavit shows that a recent web search indicates that the first respondent is currently to be found at "1st Floor Building E, No 195 Goaqi Village, Dainqian St, Huli District, Xiamen, Fujian, China" ("the first respondent's premises") and has a current email address at "info@gracesolar.com". In response to one of his emails sent to both info@gracesolar.com and sales021@gracesolar.com, Mr Masterson received a brief email reply on 21 November 2012 from a Michelle Cao of the first respondent, sent from a third email address, "sales@gracesolar.com". This indicates that those email addresses are monitored. I am satisfied that the First Interlocutory Application and Mr Masterson's 20 November 2012 affidavit, which were also emailed to info@gracesolar.com and sales021@gracesolar.com, have come to the first respondent's attention. 10 Mr Masterson's affidavit further indicates that the Amended Interlocutory Application, the Second Interlocutory Application and the Court's orders of 11 February 2013 have been sent by registered post to the first respondent's premises and to info@gracesolar.com, sales021@gracesolar.com and sales@gracesolar.com. Mr Masterson's most recent affidavit shows that his 14 February 2013 affidavit was sent by registered post to the first respondent's premises and to info@gracesolar.com, sales021@gracesolar.com and sales@gracesolar.com. 11 Whilst Mr Masterson's most recent affidavit shows that, for reasons unknown, the documents sent by registered post and his 14 February 2013 affidavit were not successfully delivered at the first respondent's premises, this affidavit also indicates that a notice was left at the first respondent's premises requesting a representative of the first respondent to collect the documents from a nearby post office. Mr Masterson's affidavit indicated that a further notice to this effect would be sent if the documents were uncollected. Only if the documents remained unclaimed after this would they be returned. 12 Notwithstanding the position with respect to the documents sent by registered post, I am satisfied that copies of these documents would have come to the first respondent's attention as a result of being emailed to the addresses info@gracesolar.com, sales021@gracesolar.com and sales@gracesolar.com. 13 The first respondent has filed no submissions, and the Court has received no correspondence from the first respondent since Ms Wu's email of 6 September 2012. Nobody appeared today to oppose the applicant's Second Interlocutory Application. 14 In these circumstances, it is appropriate to make the orders under Rule 10.48, in the terms the applicant seeks. Accordingly, I would make these orders, as well as orders setting a timetable for the hearing of the applicant's Amended Interlocutory Application dated 14 February 2013. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kenny. Associate: Dated: 1 March 2013